Bloomberg BNA Publishes Privilege Waiver Article by Akin Gump’s Elderkin and Schwerin

Bloomberg BNA’s Patent, Trademark & Copyright Journal has published the article “Privilege Waiver Under In re OptumInsight,” written by Akin Gump intellectual property partner Dianne Elderkin and associate Andrew Schwerin. The article reviews the state of attorney-client and work-product privileges in light of district court and Federal Circuit rulings in In re OptumInsight.

The OptumInsight case stemmed from an antitrust lawsuit in which a subsidiary of the company was accused of making fraudulent statements pertaining to a patent it held. The U.S. Court of Appeals for the Federal Circuit, in a nonprecedential decision, upheld a district court finding that the patentee’s submission of an attorney declaration in an ex parte reexamination proceeding waived both attorney-client and work product privileges.

Elderkin and Schwerin write that the district court decision “is of interest for what it reveals about the potential scope of waiver triggered by a submission to the U.S. Patent and Trademark Office [PTO].” While they review that decision in the article, they also look at other cases where PTO submissions have been found to trigger waiver. They also analyze cases where courts found work product protection applicable to materials prepared for proceedings before the PTO.

To read the full article, please click here.